Category: Startup Businesses

We should all have a sincere interest in encouraging and assisting startup businesses, particularly those in our local areas. Startup owners are excited, creative, and many times provide useful services, products, and eventually (hopefully) create new jobs. All too often, however, by the time we speak with a startup about Intellectual Property opportunities, they have already picked a product or a business name or brand that is not registrable on the Principal Register as a trademark or servicemark because it is descriptive.

Accept This as Fact … 😉

For purposes of this blog post, take my word for it that the benefits of federal trademark registration are considerable. Ok, if you do not want to take my word for it, read here, here and here. Now that you are convinced beyond-any-reasonable-doubt that trademark registration (federal or state) is worthy of consideration for your startup or existing business, let’s look at the the four most likely landing spots (excluding generic) on the Trademark Spectrum of 5 categories for the name or brand you may be considering.

The “Trademark Spectrum”

Below are the five categories of trademarks as identified by the U.S. Patent and Trademark Office (“PTO”):

Generic – e.g., Kleenex, Coke, BUNDT for cakes, but maybe not yet for Google or XEROX in U.S., or XEROX (overseas). Here is a list of 41 alleged generic terms to help you better understand this category. There is likely legitimate disagreement as to whether or not all 41 of these are generic. Also, as noted above, it is unlikely that a new mark will be generic.

Suggestive – this is generally considered to be the best type of trademark to select – e.g., SPEEDI BAKE for “frozen dough,” or NOBURST for “antifreeze,” or see here for a discussion about suggestive marks.

Fanciful – e.g., XEROX or PEPSI before they became synonymous with the products they identified and, arguably, started becoming “generic” via genericide.

Arbitrary – e.g., XYZ Plumbing. The PTO defines an arbitrary mark as “a known word used in an unexpected or uncommon way.”

Click here for another blogger’s perspective on the five trademark categories.

Goods and Services

The goods and services associated with the mark are what make a mark descriptive. For example, Bass is not descriptive for an English Ale, e.g.,

but it could be for a fishing related product, such as a BIG MOUTH BILLY BASS. On a historical note, The Trademark Blog reports that the Bass mark for English Ale has been in use since the 1600’s and was the first ever registered mark in England. The triangle-and-script logo above is an example of a stylized / design mark, actually a composite of sorts since it also includes the word mark, BASS, referred to as the Literal Element on the PTO application.

So What Should You Do (or not do) in Deciding Upon a Name

This list below of four suggestions is by no means exhaustive, but should be good to get you started:

ONE: At a minimum, do a search for the name you are considering. Use Google, Bing or Yahoo, or all three. Also search the TESS database at the PTO.

Don’t pick a name without doing some form of a search, the more comprehensive, the better. You may regret not searching and it may be very costly, even fatal to your startup or business.

TWO: Spend time trying to come up with a catchy / suggestive name if you can. Talk to friends, see what similar businesses have done. Also seriously consider engaging an advertising or marketing firm to help you in selecting a name and / or logo for your business. This logo is something you should hope to use for the life of your business.

Don’t ignore (or continue to ignore) the benefits of trademark or servicemark registration. It is difficult to imagine a company or business that would not benefit in some way by employing an informed trademark portfolio development strategy.

FOUR: Once you think you have educated yourself on these issues, talk to an experienced trademark attorney about your options. If the startup has limited funds, you will want to know which trademark / servicemark filings need to be prioritized and be ready to budget for same in your search for capital. For some business models, the trademark is possibly the most valuable asset from the outset, and should not be overlooked.

Similarly, if you insist or cannot escape your commitment to a descriptive name, getting it on the Supplemental Register sooner is better than later and will start the clock running on the five-year secondary meaning presumption to move the mark to the Principal Register.

Trademark law can be very complex and is usually (almost always) filled with irony. For example, consider an excessively eager party with an unregistered trademark / brand that sends a nasty cease-and-desist to another party only to discover the recipient of the nastygram is the senior user of the mark! Then the supposed senior user learns in discovery that their mark was not used for 2 or 3 years and may now be considered abandoned, making the sender the senior user?

Don’t Overlook Trademark / Servicemark OPPORTUNITIES

Amongst the primary Intellectual Property fields of patents, copyrights, and trade secrets, trademarks are often overlooked as simply the name for a business. Overlooking this opportunity to brand your business or product is often costly in terms of value when it comes time to sell the business, or in lost resources when time must be spent responding to infringement allegations.

Whether your business is a startup or has been around for generations, you want to be able to avoid or overcome problems related to use of a descriptive name. If possible, doing that from the outset is likely best. In any event, don’t let becoming informed about your trademark options be a missed opportunity for your startup.

About This Blog

Our aim is entertain and educate our readers regarding on the types of legal cases our firm typically handles, including all types of business disputes, defamation, civil rights / excessive force, and intellectual property. We prefer to focus on how facts relate to jury trials, with the intent of adding value to your visit. We sincerely hope you will enjoy the blog and look forward to your comments or other input. See also link to Twitter … @WesFewSC

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About Wes Few

Wes comes from a family of accomplished lawyers. He has over 19 years experience in law practice and as a district court law clerk. Wes’s focus is client service and results. Wes enjoys practicing law, and he treats his client’s cases like they were his own. If you have any questions on legal issues in South Carolina, Wes is committed to make sure you get the right legal advice you need, and would be delighted to speak to you and accept your case, or direct you to the right lawyer for your needs.